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What to Do When the Patent Office Says ‘No’

Posted on Mar 28, 2018 in Articles

This article originally appeared in The Legal Intelligencer on March 20, 2018.

According to the U.S. Supreme Court, a patent application is one of the most difficult legal instruments that can be drafted (Topliff v. Topliff, 145 U.S. 156 (1892)). Small wonder that most patent applications are initially rejected by the Patent Office. Although negotiating with the Patent Office examiner, including presenting amendments and arguments often will lead to a patent application being issued as a U.S. patent, there are times when no amount of effort will translate into success.

The patent application process is referred to as a “pro se” proceeding, meaning there is technically only one party involved—the patent applicant. While a Patent Office examiner is being the “traffic cop” if you will—giving the red light or the green light for an inventor to get his patent—the examiner’s role is not adversarial. In the process of getting a patent, it is not as if one is “suing” an examiner. Rather, U.S. patent examiners are merely representing the public interest by  determining whether the patent application satisfies the requirements of the U.S. Constitution and the federal statutes. And yet, patent examiners and patent attorneys will sometimes disagree on whether the statutes are being applied correctly. Try as they might, attorneys will sometimes dispute examiner positions, to no avail.

Fortunately, the Patent Office provides mechanisms where attorneys can try different tactics to advance their positions. An attorney typically has two opportunities to respond to Patent Office rejections, and upon paying a fee, two more opportunities ad infinitum. At some point, however, it will become apparent that nothing that seems reasonable to the attorney and client will convince an examiner to change his position.

For those situations, the most common strategy is to seek an appeal with the Patent Office’s Patent Trial and Appeal Board (PTAB), or more typically, the board. In this process, the attorney files an appeal brief, the examiner files an answer, and the attorney files a reply to address any additional issues raised by the examiner’s answer. Occasionally the examiner files a supplemental answer to respond to issues addressed in the reply brief. Based on these filings, and sometimes including a subsequent oral hearing requested by the attorney, the PTAB then decides the case. Three Administrative Patent Judges (APJs) consider the record and render a decision with a written opinion. If the decision is adverse, the board can be requested to reconsider its position. Sometimes, the mere act of filing an appeal brief is enough to convince an examiner to change his position and allow the patent application.

A PTAB opinion is required to provide a detailed explanation of how the decision was reached. Statutes, rules and case law may be cited in support of the opinion. If an applicant disagrees with the board, an appeal may be filed with the U.S. Court of Appeals for the Federal Circuit (CAFC).

Appeals of Patent Office rejections to the CAFC do not occur very often, but when they do, they provide patent attorneys with helpful guidance for dealing with the Patent Office. The Patent Office is required to abide by the judicial law created by CAFC opinions, and those opinions may be used to advance other patent applications that are under Patent Office examination.

Last month, for example, the CAFC decided an appeal over a rejected patent application (In re Kenneth Andrew Hodges, 2017-1434 (Fed. Cir. 2018)). The invention related to a drain valve with a sensor that generates a signal when internal pressure is detected. The examiner rejected the application, arguing that the invention was not new (or anticipated) because two prior patents disclosed all of the features of the invention. The board affirmed the examiner’s rejections, and the applicant appealed to the CAFC. The CAFC reviewed the board’s factual findings and legal conclusions de novo.

The CAFC reviewed the first prior patent cited by the examiner, and with a diagram reproduced in the CAFC’s opinion, explained why they disagreed with the Board’s findings. While the opinion noted that the board had described the first prior patent and the rejected patent application as being “similar,” that was not enough to affirm the examiner’s rejection: “The board neither supported its assertion of similarity nor explained how the [prior art reference] … would enable a skilled artisan to practice the invention [of the rejected patent application] … without undue experimentation.” The CAFC added, “though our review of an anticipation finding is deferential, we have not hesitated to reverse the Board when substantial evidence does not support its findings.”

In reviewing the second prior patent, the CAFC disagreed with the examiner’s position (which was affirmed by the board) that the patent disclosed the “signal” claimed in the application. While the board is permitted to interpret patent claim language broadly (referred to as the broadest reasonable interpretation standard) in determining whether a claimed feature is disclosed in the prior art, the CAFC found the boards interpretation of the claimed meaning of “signal” to be “strained,” stating that “the board cannot construe the claims so broadly that its constructions are unreasonable under general claim construction principles.” On this basis the CAFC again disagreed with the board.

Finally, the CAFC disagreed with the board’s affirmance of the examiner’s position that a combination of the two prior patents rendered the claims of the patent application “obvious” and therefore unpatentable. The board had rejected the claims “for the same reasons as presented above.” The CAFC, however, explained that the board “must … explicate its factual conclusions, enabling us to verify readily whether those conclusions are indeed supported by substantial evidence contained within the record.” Concluding that “the board did not do so here” and “the board has failed to explain its reasoning to allow us to determine whether its findings would be lawful,” the board’s rejection was vacated. The CAFC explained that “when an agency’s fact-findings and explanation are deficient, the proper course, except in rare circumstances, is to remand to the agency for additional investigation or explanation.”

What if a patent applicant is dissatisfied with a decision from the CAFC? The next option available is to file a writ of certiorari with the U.S. Supreme Court. While the U.S. Supreme Court does on occasion decide appeals related to rejected patent applications, such decisions are exceedingly rare.

Certainly, the monetary value of a potential patent drives the budget for its procurement. Since a patent application is one of the most complex legal documents in existence, it needs to be prepared with care to ensure maximum chances of success.

– By Lawrence E. Ashery

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